See as well : Search for prior art when filing the trademark
Can a common language word be used as a trademark?
An entrepreneur is often tempted to use a word in everyday language as a brand name to designate his products or services, thinking thus to ensure the best visibility for his product by using a term that describes the product…serious error.
Using the word "crossbow" as a trademark to sell crossbows is prohibited, according to a general principle of trademark law: the descriptive terms of the product or service to which one wishes to apply the trademark are to be avoided, under penalty of nullity (article L711-2 of the Intellectual Property Code).
This is to avoid a person picking up a word in everyday language, the use of which would otherwise become prohibited to designate similar products sold by competitors, and when it is a common term to designate the object we are talking about.
In other words, everyone could be afraid of infringing the rights of the trademark owner every time they talk about a crossbow, at least in a business context.
Thus, another crossbow seller could not even use the word "crossbow" to sell his!
On the other hand, the word "crossbow" could be used as a trademark to designate, for example, televisions.
The temptation is however frequent for an entrepreneur to want to use a common word, or an approaching expression, as a brand to designate his products and services, his activity.
Hence the contention between trademark holders who have succeeded in having a common word or an expression reminiscent of a characteristic of the product they sell, and their competitors who have had the same reflex, registered as a trademark.
The debate will then often focus on the validity of the mark, its notoriety, on the actual use of the mark with regard to such type of product or service, as well as the risk of confusion, in the public, on the origin of those products or services.
Tip: use original, distinctive, non-descriptive marks!
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See as well :
Trademark law: the likelihood of confusion also concerns weakly distinctive marks
Recent example of case law on weakly distinctive marks with risk of confusion excluded:
Aix-en-Provence Court of Appeal, ch. 3-1, December 9, 2021, 20/03556 (M20210293)
My Luxury Travel SARL c. My Luxury Travel SAS
(Confirmation TJ Marseille, Jan. 23, 2020, 18/01275)
Update April 22, 2022
Court of Appeal of Bordeaux, March 7, 2022, RG n°21/04492, this judgment recalls that a trademark cannot prohibit prior possession of a sign at the local level, on condition of effective exploitation, in application of the article L713-6 of the intellectual property code.
Article L713-6 of the Intellectual Property Code
Version in force since December 15, 2019
Amended by Ordinance No. 2019-1169 of November 13, 2019 – art. 5
I. – A trademark does not allow its holder to prohibit a third party from using, in the course of business, in accordance with fair trade practices:
1° His family name or his address when this third party is a natural person;
2° Signs or indications which are devoid of any distinctive character or which relate to the type, quality, quantity, destination, value, geographical origin, time of production of the product or the provision of the service or other characteristics thereof;
3° Of the mark to designate or mention products or services as being those of the holder of this mark, in particular when this use is necessary to indicate the destination of a product or service, in particular as an accessory or spare part.
II. – A trademark does not allow its holder to prohibit a third party from using, in the course of business, a commercial name, a sign or a domain name, of local scope, when this use is prior to the date of the application for registration of the mark and is exercised within the limits of the territory where they are recognized.
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